Ex Parte Sekino et al

Patent Trial and Appeal Board

Feb 24, 2016

12497944 (P.T.A.B. Feb. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/497,944 0710612009
23623 7590 02/26/2016
AMIN, TUROCY & WATSON, LLP
127 Public Square
57th Floor, Key Tower
CLEVELAND, OH 44114
FIRST NAMED INVENTOR
Toshiharu Sekino
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
TOSHP187USB 7510
EXAMINER
CULLER, JILL E
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
02/26/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketl@thepatentattorneys.com
swati@thepatentattorneys.com
hmckee@thepatentattorneys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOSHIHARU SEKINO, KENJI EOKA,
KOUSUKE TAKAHASHI, TAKES HI HIYOSHI,
TSUYOSHI SANADA, and AKIRA SUZUKI
Appeal2014-003467
Application 12/497,944
Technology Center 2800
Before HUNG H. BUI, JON M. WRGOV AN, and ADAM J. PYONIN,
Administrative Patent Judges.
JURGOV AN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-3, 5, and 7-9, the only claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.2
1 Appellants identify Toshiba Tee Kabushiki Kaisha and NCR Corporation
as the real parties in interest. (App. Br. 2).
2 Our Decision refers to the Specification filed July 6, 2009 ("Spec."); the
Final Office Action mailed Apr. 26, 2013 ("Final Act."); the Appeal Brief
filed Oct. 28, 2013 ("App. Br."); the Examiner's Answer mailed Nov. 26,
2013 ("Ans."); and the Reply Brief filed Jan. 27, 2014 ("Reply Br.").
Appeal2014-003467
Application 12/497,944
STATEMENT OF THE CASE
The claims are directed to a printer for two-sided printing of thermal
paper. (See, e.g., Spec. 34, 40). Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A printer designed to print data on a thermal paper
having a thermosensible layer on a first side, said printer
compnsmg:
a first thermal head arranged to contact the first side of
the thermal paper and to print data on the first side of the
thermal paper;
a first platen opposed to the first thermal head across the
thermal paper;
a second thermal head arranged upstream with respect to
the first thermal head in a direction of feeding the thermal paper
and arranged to contact a second side of the thermal paper to
print timing marks that indicate a position where the thermal
paper should be cut on the second side of the thermal paper;
a second platen opposed to the second thermal head
across the thermal paper;
a first paper sensor arranged upstream with respect to the
second thermal head in the direction of feeding the thermal
paper to detect the thermal paper;
a second paper sensor arranged between the first thermal
head and the second thermal head to detect the thermal paper
and to detect the timing marks printed on the second side of the
thermal paper; and
a controller that:
outputs a first set of pulses to a motor to drive the
first platen roller and the second platen roller to move the
thermal paper toward the first thermal head in response to
a first signal from the first paper sensor that indicates that
the thermal paper is located between a receptacle and the
second thermal head,
outputs a second set of pulses to the motor to stop
driving the first platen roller and the second platen roller
to facilitate the first printer head printing the data and the
second thermal head printing the timing marks that
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Application 12/497,944
indicate the position where the paper should be cut in
response to a second signal from the second paper sensor
that indicates a detection of a distal end of the thermal
paper,
outputs a number of pulses in a third set of pulses
to the motor to drive the first platen roller to rotate a first
amount in a first direction and the second platen roller to
rotate a second amount in a second direction to move the
thermal paper a distance corresponding to the number of
pulses until the thermal paper reaches the position where
the thermal paper should be cut; and
facilitates cutting the thermal paper at the position
where the thermal paper should be cut by the cutting
mechanism.
REJECTION
Claims 1-3, 5, and 7-9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inoue (JP 2004-233705; Aug. 19, 2004); Takagi (US
7,036,923 B2; May 2, 2006); Tolrud (US 5,823,692; Oct. 20, 1998); and
Shiozaki (US 6,068,419; May 30, 2000). (Final Act. 2-5).
ANALYSIS
1. Amount of Rotation of Pulse Motor
Appellants argue the controller of claims 1, 8, and 9 emits pulses that
govern the amount of rotation of two platen rollers. (App. Br. 5---6).
According to Appellants, there is no teaching or suggestion of this feature in
the combination of Inoue, Takagi, Tolrud, and Shiozaki. Id.
The Examiner notes that Shiozaki teaches a "pulse motor" used in a
printing system to drive a platen roller, and that, although Shiozaki does not
spell out that pulses govern the amount of rotation, this is understood by the
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Application 12/497,944
nature of a "pulse motor" and is within the level of a person of ordinary skill
in the art. (Ans. 2).
Appellants do not refute the Examiner's finding that the nature of a
pulse motor is such that pulses govern the amount of its rotation. 3 In
combination with Shiozaki 's teaching of a pulse motor used to drive a platen
roller (5:1-3), we are not persuaded the Examiner errs in concluding the
combined references teach that pulses govern the amount of rotation of
platen rollers.
2. Controller Providing Interface Between Sensors and Pulse Motor
Appellants argue Tolrud fails to teach or suggest that a controller can
provide an interface between sensors and a pulse motor. (App. Br. 6).
Specifically, Appellants argue "Tolrud cannot be combined with Inoue,
Takagi, and Shiozaki to achieve a printer with platen rollers that can rotate
an amount in a direction based on pulses emitted by a controller based on a
signal from a sensor." (Id.).
The Examiner finds that Tolrud teaches a controller using sensor
signals to control registration and cutting of printed material. (Ans. 3 (citing
Tolrud 5:50-54)). The cited section of Tolrud states:
Signals from the sensor 119 of detector assembly 110 are sent
to the control circuitry for controlling the cutter, and for
controlling the cutter feed rollers, as well as for controlling the
printer, so that it is known that the printed sheet 13 is aligned
with the optical detector and cutter assembly 20.
3 We note in passing it is well known in this art that many types of motors,
such as stepper motors or servo motors, have the capability to rotate by
amounts determined from pulses provided to the motor.
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Application 12/497,944
We agree with the Examiner's finding that Tolrud teaches a controller
providing an interface between sensors and a pulse motor to control "cutter
feed rollers." When combined with Shiozaki's teaching of a pulse motor
driving a platen roller, we agree with the Examiner that the cited
combination teaches a printer with platen rollers that can rotate by amounts
determined from pulses received from a controller based on sensor signals.
Thus, we are not persuaded the Examiner errs in the rejection.
3. Design Choice
Appellants argue use of a pulse motor and a specific train of pulses is
not a mere "design choice," which is a rationale for an obviousness rejection
when claimed subject matter merely arranges known elements in a
configuration that is functionally equivalent to a known configuration (App.
Br. 6-7 (citing In re Kuhle, 526 F.2d 553, 555 (CCPA 1975)).
The Examiner explains that Appellants misapprehend the thrust of the
rejection because "design choice" is not the rationale used. (See Ans. 3).
We agree. By referring to use of a pulse motor as "a well-known choice" in
the rejection (see Final Act. 6-7), the Examiner is not stating that use of a
pulse motor is a "design choice." Instead, this statement means it is obvious
to substitute Tolrud's motor with Shiozaki's pulse motor. Claimed subject
matter that involves no more than simple substitution of one known element
for another yielding a predictable result is considered obvious. KSR
International Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)("KSR").
Thus, Appellants' arguments concerning design choice are inapposite.
Replacing Tolrud's motor with Shiozaki's pulse motor is simple substitution
of one known element for another yielding the predictable result of driving a
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Application 12/497,944
platen roller in a printer. Accordingly, Appellants' arguments do not
persuade us of error in the Examiner's rejection.
4. Paper Reversing Function
Appellants argue the claimed features provide a reversing function
that can return paper to a position near a thermal head of the printer, to avoid
causing an unprintable region and corresponding waste of paper. (App. Br.
7). The Examiner finds one of ordinary skill would be aware that it is
common to perform a paper reversing function to avoid wasted paper, as
taught by Takagi (10:42--47). (Ans. 3--4). According to the Examiner, use
of this function in conjunction with a pulse motor would have been obvious
to a person of ordinary skill. (Id.).
We are not persuaded the Examiner errs in finding that paper
reversing functions are well known in the printer art, as exemplified by
Takagi, or that the Examiner errs in finding that combining the same with
Shiozaki' s pulse motor would have been obvious to a person of ordinary
skill. In evaluating a§ 103(a) rejection based on a combination of
references, a court must ask whether the claimed invention is more than the
predictable use of prior art elements for their established functions. (See
KSR at 417). We are also mindful that "[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." (See KSR at 415-16). We agree
with the Examiner this is the case here.
Moreover, Appellants present no evidence the combination of the
reference features would have been uniquely challenging or difficult for one
of ordinary skill in the art. Leapfrog Enterprises, Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007). In this regard, we note that
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Application 12/497,944
arguments of counsel cannot take the place of factually supported objective
evidence. In re Huang, 100 F.3d 135, 139--40 (Fed. Cir. 1996); In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
5. Reply Brief Arguments
Appellants present new arguments in the Reply Briefthat were not
raised earlier on appeal. Specifically, Appellants argue: (1) the Examiner
has not identified evidence in the prior art which would motivate one of
ordinary skill in the art to combine the references; and (2) that Tolrud fails to
disclose a single controller in communication with multiple sensors. (Reply
Br. 6 and 7).
Reviewing the Appeal Brief, we see no place where these arguments
were raised, and these arguments appear not to be responsive to any
argument raised in the Examiner's Answer. Appellants have provided no
showing of good cause to explain the late submission of these arguments.
Given the circumstances, we do not consider these arguments. (See 37
C.F.R. § 41.41(b)(2)).
DECISION
For the foregoing reasons, we affirm the rejection of claims 1-3, 5,
and 7-9 under 35 U.S.C. § 103(a) based on Inoue, Takagi, Tolrud, and
Shiozaki.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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